Trials@uspto.gov
`571-272-7822
`
` Paper 38
`
` Entered: August 11, 2022
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-00470
`Patent 10,259,020 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, SHEILA F. McSHANE, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
` Paper 38
`
` Entered: August 11, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-00470
`Patent 10,259,020 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, SHEILA F. McSHANE, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2021-00470
`Patent 10,259,020 B2
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`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1–10 and 16–19 of U.S. Patent No. 10,259,020 B2 (Ex. 1001, “the
`’020 patent”). Paper 1 (“Pet.”). GUI Global Products, Ltd., D/B/A Gwee
`(“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`Upon review of these papers, we instituted inter partes review, pursuant to
`35 U.S.C. § 314, as to claims 1–10 and 16–19 based on the challenges set
`forth in the Petition. Paper 10 (“Institution Decision” or “Inst. Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 20, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`Response (Paper 24, “Pet. Reply”), and Patent Owner filed a Sur-Reply
`(Paper 30, “Sur-Reply”). On May 19, 2022, we held an oral hearing. A
`transcript of the hearing is of record. Paper 37 (“Tr.”).
`For the reasons that follow, we conclude that Petitioner has proven by
`a preponderance of the evidence that claims 1–10 and 16–19 of the ’020
`patent are unpatentable.
`
`A. Related Matters
`The parties indicate that related district court litigations are GUI
`Global Prods., Ltd. d/b/a Gwee v. Samsung Elecs. Co., No. 4:20-cv-02624
`(S.D. Tex.) and GUI Global Prods., Ltd. d/b/a Gwee v. Apple, Inc., No.
`4:20-cv-02652 (S.D. Tex.). Pet. 90; Paper 5, 1. The parties also indicate that
`the ’020 patent is the subject of a petition filed by Samsung Electronics Co.,
`Ltd. and Samsung Electronics America, Inc. in IPR2021-00335. Pet. 90;
`Paper 5, 2. In the IPR2021-00335 proceeding, the Board concluded that
`claims 1–19 of the ’020 patent are unpatentable by a preponderance of the
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`evidence. Samsung Elecs. Co., Ltd. et al. v. GUI Global Prods., Ltd., d/b/a
`Gwee, IPR2021-00335, Paper 26 at 66–67 (PTAB June 29, 2022).
`
`B. The ’020 Patent
`The ’020 patent describes how an apparatus may be used for cleaning
`view screens of electrical devices. Ex. 1001, 1:32–34. The ’020 patent aims
`to address the lack of convenient cleaning materials faced by users portable
`electronic devices. Id. at 1:52–2:6. In one embodiment, a cleaning
`component for cleaning a view screen of an electronic device is coupled to a
`first case of the electronic device using magnetic attractive force. Id. at
`2:10–16, Fig. 1B. Figure 1B is illustrative and is reproduced below.
`
`
`Figure 1B shows a side view of a cleaning component. Id. at 4:27–28.
`Cleaning component 100 includes ferromagnetic or ferrimagnetic substrate
`102 covered by cleaning material 101, such as a fabric or a cloth. Id. at
`6:19–39.
`In another embodiment, a second case receives the cleaning
`component and also “functions to protect an electronic device’s primary
`case.” Id. at 2:39–53; Fig. 3. Figure 3 is illustrative and is reproduced
`below.
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`Figure 3 shows a computer case configured to receive a cleaning component.
`Id. at 4:35–36. Laptop 300 has rectangular indentation 302 dimensioned for
`receiving cleaning component 303 which has a magnet. Id. at 8:51–58.
`Figure 5A is also illustrative and is reproduced below.
`
`
`Figure 5A shows “a lateral type phone case configured to receive a cleaning
`component.” Id. at 4:39–40. Case 500 includes body 504 “which functions
`to hold a smartphone” and a lid having top 501, side 502, hinge 507, and
`cleaning component 503. Id. at 10:2–7.
`
`The cleaning component is secured and adhered to a case via
`“dimensional stability to increase the security with which the cleaning
`components are adhered to the case.” Id. at 11:34–39; Fig. 9. Figure 9 is
`illustrative and is reproduced below.
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`Figure 9 shows a cleaning component “employing a structural feature to
`enhance adhesion.” Id. at 4:50–51. Device 901 has raised section 902 that is
`configured to fit within recess 904 of cleaning component 903. Id. at 11:39–
`41.
`
`In yet another embodiment, the cleaning component has a magnetic
`element that activates or deactivates a magnetic switch. Id. at 2:65–67. The
`’020 patent describes “activating or deactivating a device having a magnetic
`switch” as a “secondary application[]” and that “cleaning devices” “may
`also be manufactured without a cleaning component for use with the
`secondary application.” Id. at code (57); see also id. at 11:53–56 (explaining
`that the cleaning component may be able to activate magnetic switches on
`devices having switches). Thus, a device “may or may not include cleaning
`capabilities but will include a rare earth magnet or magnets” for “additional
`functionality.” Id. at 16:31–35.
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`Figure 24 is illustrative and is reproduced below.
`
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`
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`Figure 24 shows a tablet computer having a switching device. Id. at 5:43–44.
`Tablet computer 2400 has switching device 2401 that “is selectively coupled
`to the front of the portable electronic device 2402 outside of the view screen
`2403.” Id. at 17:63–67. A “magnetic switch is normally disposed with the
`portable electronic device but is shown [in Figure 24] for illustration
`purposes (2404).” Id. at 17:67–18:2. The ’020 patent describes that the
`switching component “may be picked up” and the switching device “is either
`applied directly to the magnetic switch or applied to either side of the switch
`and then slid past it to activate or deactivate the portable electronic device.”
`Id. at 18:3–8.
`
`Figure 25, reproduced below, shows a side view of the switching
`device in Figure 24. Id. at 5:45–46, 18:9–10.
`
`
`Figure 25 shows switching device 2401 having bottom surface 2501, top
`surface 2502, and ferromagnetic or ferrimagnetic substrate 2504 disposed
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`therebetween. Id. at 18:9–11, 13–15. Tab 2503 “on the top surface”
`facilitates manipulation of switching device 2401. Id. at 18:12–13.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–10 and 16–19 of the ’020 patent. Claim
`1 is the only independent claim, and claims 2–10 and 16–19 depend directly
`or indirectly therefrom. Claim 1 is reproduced below, which includes
`changes made per a Certificate of Correction.
`1. A system comprising:
`a portable switching device coupled to a portable electronic
`device;
`wherein:
`the switching device and the electronic device are
`configured
`to selectively couple
`to each other
`employing magnetic force from a first magnet disposed
`within the switching device;
`the switching device comprises a first case;
`the electronic device comprises a second case and an
`electronic circuit that is responsive to the switching
`device; the electronic device comprises at least one
`element selected from the group consisting of beveled
`edges, ridges, recessed areas, grooves, slots, indented
`shapes, bumps, raised shapes, and combinations
`thereof; configured to correspond to complementary
`surface elements on the switching device;
`the portable switching device is configured to activate,
`deactivate or send into hibernation the portable
`electronic device; and
`when coupled, the second case functions to protect the first
`case.
`Ex. 1001, 21:28–22:2, p.27.
`
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`D. Instituted Grounds of Unpatentability
`Petitioner asserts that claims 1–10 and 16–19 are unpatentable based
`on the following grounds. Pet. 1.
`
`Grounds
`
`1A
`
`1B
`
`1C
`1D
`
`1E
`
`1F
`
`2A
`
`Claim(s)
`Challenged
`1–3, 5–7,
`10, 16, 19
`2
`4, 18, 19
`8, 9
`
`10
`
`17
`1–3, 5–7,
`10, 16, 19
`
`35 U.S.C §
`
`Reference(s)/Basis
`
`103(a)1
`
`103(a)
`103(a)
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`Bohbot,2 Gundlach3
`Bohbot, Gundlach,
`Nishikawa4
`Bohbot, Gundlach, Li5
`Bohbot, Gundlach,
`Stevinson6
`Bohbot, Gundlach,
`Rosener7
`Bohbot, Gundlach,
`Stevinson, Iio8
`Bohbot, Gundlach, and
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`’020 patent has an effective filing date before the effective date of the
`applicable AIA amendments, we refer to the pre-AIA version of 35 U.S.C.
`§ 103.
`2 Certified English Translation of FR2912858, published August 22, 2008
`(Ex. 1004, “Bohbot”). FR2912858 is filed as Exhibit 1021.
`3 U.S. Pat. Appl. Pub. No. US 2008/0132293 A1, published June 5, 2008
`(Ex. 1005, “Gundlach”).
`4 U.S. Pat. Appl. Pub. No. US 2007/0145255 A1, published June 28, 2007
`(Ex. 1059, “Nishikawa”).
`5 CN201114710Y, published September 10, 2008 (Ex. 1006, “Li”).
`6 U.S. Pat. Appl. Pub. No. US 2011/0317865 A1, published December 29,
`2011 (Ex. 1007, “Stevinson”).
`7 U.S. Pat. Appl. Pub. No. US 2008/0076489 A1, published Mar. 27, 2008
`(Ex. 1050, “Rosener”).
`8 U.S. Pat. Appl. Pub. No. 2011/0218502 A1, published September 8, 2011
`(Ex. 1010, “Iio”).
`
`8
`
`
`
`2B
`
`2C
`
`2D
`
`2E
`
`2F
`
`2
`
`4, 18, 19
`
`8, 9
`
`10
`
`17
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
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`Grounds
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`Claim(s)
`Challenged
`
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`35 U.S.C §
`
`Reference(s)/Basis
`Diebel9
`Bohbot, Gundlach,
`Diebel, and Nishikawa
`Bohbot, Gundlach,
`Diebel, and Li
`Bohbot, Gundlach,
`Diebel, and Stevinson
`Bohbot, Gundlach,
`Diebel, and Rosener
`Bohbot, Gundlach,
`Diebel, Stevinson, and
`Iio
`Petitioner supports its challenges with the Declaration and
`Supplemental Declaration of Dr. Jeremy Cooperstock. Exs. 1003, 1089.
`Patent Owner supports its arguments with the Declaration of Dr. Hamid
`Toliyat. Ex. 2001. We instituted review on the grounds set forth above. Inst.
`Dec. 8, 41.
`
`II. DISCUSSION
`A. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`
`
`9 U.S. Pat. Appl. Pub. No. 2010/0124040 A1, published May 20, 2010 (Ex.
`1030, “Diebel”).
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`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`indicia of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`B. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted).
`Citing the testimony of Dr. Cooperstock, Petitioner contends that “[a]
`person of ordinary skill in the art at the time of the ’020 patent (a ‘POSITA’)
`would have had at least a Bachelor’s degree in an academic area
`emphasizing electrical engineering, mechanical engineering, or a similar
`discipline, and at least two years of experience in the field working with
`electronic devices.” Pet. 4 (citing Ex. 1003 ¶ 20). Petitioner also asserts that
`“[s]uperior education could compensate for a deficiency in work experience,
`and vice-versa.” Id.
`Citing the testimony of Dr. Toliyat, Patent Owner contends that
`[a] person of ordinary skill in the art at the time of the ’020 patent
`. . . would have had either a bachelor’s degree in electrical
`engineering, computer science, or mechanical engineering with
`some level of post-baccalaureate electronic device or system
`design experience, or someone with an equivalent level of
`experience and training through other means. Superior education
`might be able to compensate for a deficiency in work experience,
`and vice-versa.
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`PO Resp. 7–8 (citing Ex. 2001 ¶ 19); see Ex. 2001 ¶ 20 (adopting proposed
`definition of POSITA set forth by Patent Owner). Dr. Toliyat further testifies
`that
`
`the use of the phrase “at least” in Dr. Cooperstock’s definition of
`a POSITA leaves the actual educational and other experience of
`a POSITA in doubt because it encompasses someone of greater
`education, training, and skill than a POSITA and could even
`include an expert in the field. As such, Dr. Cooperstock’s
`definition of a POSITA is of questionable assistance in
`understanding the true qualifications of the POSITA and how
`such a person would understand and employ the teachings of the
`various references cited in the petition.
`Ex. 2001 ¶ 20. Nevertheless, Dr. Toliyat further testifies that “Dr.
`Cooperstock’s definition of a POSITA is somewhat different than mine;
`however, my opinions in this declaration would be the same regardless of
`whether or not my description or Dr. Cooperstock’s description of a
`POSITA is used.” Id. ¶ 22.
`We adopt Petitioner’s definition of the level of ordinary skill in the
`art. Patent Owner’s proposed level of qualifications overlaps substantially
`with Petitioner’s proposed level, however, we agree with Dr. Toliyat that the
`term “at least” should be eliminated because it introduces ambiguity. Even if
`we adopted Patent Owner’s proposed level of qualifications, the analysis
`presented in this Decision and the outcome would remain the same.
`
`C. Claim Construction
`In this inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (2020). The claim
`construction standard includes construing claims in accordance with the
`ordinary and customary meaning of such claims as understood by one of
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`ordinary skill in the art and the prosecution history pertaining to the patent.
`See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en
`banc).
`According to Petitioner, “no express constructions are required to
`institute review and find the Challenged Claims unpatentable.” Pet. 4. Patent
`Owner argues that it “has assigned the claim terms their plain and ordinary
`meanings as a POSITA would have understood them in the context of the
`‘020 patent, unless otherwise noted herein.” PO Resp. 8.
`For purposes of this Decision, we need not expressly construe any
`claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`D. Ground 1A––Obviousness of Claims 1–3, 5–7, 10, 16, and 19 Over
`Bohbot and Gundlach
`Petitioner contends that claims 1–3, 5–7, 10, 16, and 19 are obvious
`under 35 U.S.C. § 103(a) over Bohbot and Gundlach. Pet. 9–50.
`
`1. Bohbot
`Bohbot describes “a miniature communication device” that includes
`headset 31 that can be held in housing 34 of a primary module 30. Ex. 1004,
`1:4, 11:14–19, 13:20–14:1. Figure 3 is illustrative and is reproduced below.
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`Figure 3 shows a block diagram of detachable headset 31 comprising
`speaker 32, magnet 33a, and blade contactor 35a, as well as primary module
`30 comprising housing 34, ferromagnetic material 33b, blade contactor 35b
`and navigation buttons 36, 37. Id. at 11:12–12:3. Bohbot discloses that “[t]he
`system is usually supplemented by a microphone to transmit the user’s
`words,” and “[t]his microphone may be integrated into the headset or
`detached.” Id. at 1:18–20 (emphasis added). The user has the option “to
`detach the headset and place it on his/her ear for a telephone call.” Id. at
`6:17–18.
`
`2. Gundlach
`Gundlach describes a device that operates as a wireless headset and
`can be stored and charged in a host device such as a laptop computer or a
`cell phone. Ex. 1005 ¶ 2. Gundlach indicates a desire for mobility while
`managing peripherals that accompany a portable computer. Id. ¶ 3. To this
`end, Gundlach discloses that its device’s “relatively thin shape may allow
`the headset to be stored and charged in a portable cradle” and the “portable
`cradle may be a holder, clip, case or card that may fit inside a standard
`expansion slot.” Id. ¶ 56.
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`Figure 1 is illustrative and is reproduced below.
`
`
`Figure 1 shows a schematic view of a wireless device in
`communication with a host device. Id. ¶ 11. Wireless device 100 includes
`housing 101 and earpiece 104. Id. ¶ 58. Housing 101 includes microphone
`102, power source 111 such as a battery, and transceiver 106 for sending and
`receiving information 108 from host device 110 such as a computer or a cell
`phone. Id. Earpiece 104 includes speaker 105. Id. Gundlach’s wireless
`device may be held to a cradle by a magnet “which may be embedded in the
`cradle” and the wireless device “may also include a ferromagnetic portion”
`such as another magnet to which the magnet in the cradle may be attracted.
`Id. ¶ 68. The wireless device may also be held to the cradle by “mechanical
`means” such that the wireless headset is retained to the cradle. Id.
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`Figure 18b is illustrative and is reproduced below.
`
`
`Figure 18b shows a perspective view of a case for retaining a wireless
`device. Id. ¶ 52. Wireless device 1800 is provided in a clamshell case that
`has recess 1846 “defined therein to accommodate the wireless device.” Id.
`¶ 80.
`
`3. Independent Claim 1
`1[pre] Claim 1 recites “[a] system comprising:”
`1[a] Claim 1 recites “a portable switching device coupled to a
`portable electronic device.”
`Petitioner contends that “Bohbot’s ‘miniature communication device’
`(a system) includes ‘a primary module’ and ‘a detachable headset.’” Pet. 9
`(citing Ex. 1004, 3:4–9; Pet. § III.A) (emphasis omitted). Petitioner presents
`an annotated version of Bohbot’s Figure 1a, reproduced below.
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`Petitioner’s annotated version of Bohbot’s Figure 1a shows Bohbot’s
`primary module 18, which Petitioner cites as teaching the claimed portable
`electronic device. Id. at 10–11 (citing Ex. 1004, 4:22–27, 6:16–19, 9:22–
`10:1, Fig. 1b; Ex. 1003 ¶¶ 40–41; Exs. 1024, 1025; Ex. 1100 ¶ 109). In
`particular, Petitioner contends that Bohbot’s primary module 18 includes
`electronic components such as a “microphone, power storage device, [and]
`data storage unit,” as well as “navigation buttons . . . [and] blade
`contactors,” and is described as part of miniature communication device 16
`that has “reduced weight and size that ‘can...be attached to a bag, a shoulder
`strap, or any other object.’” Id. at 17 (citing Ex. 1004, 4:22–27, 6:16–19,
`9:22–10:1; Ex. 1003 ¶ 51) (alteration in original).
`Petitioner’s annotated version of Bohbot’s Figure 1a also depicts
`detachable headset 20, which Petitioner cites as teaching the claimed
`switching device. Id. at 20 (citing Ex. 1004, 6:24–25, 7:7–8, 10:5–6, 10:19,
`14:14–15; 1003 ¶ 56). Petitioner’s annotated version of Figure 1a also
`depicts primary module 18 (portable electronic device) and headset 20
`(portable switching device) in a coupled state.
`According to Petitioner, “[w]hile the ’020 patent specification does
`not expressly define the term ‘switching device,’ it does indicate that its
`‘switching device’ encompasses a device that, when detected to be in close
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`proximity to a portable electronic device, causes that portable electronic
`device to switch from one state to another.” Id. at 12 (citing Ex. 1001, 3:49–
`4:17, 11:53–63, 17:45–48, 17:64–18:8, 20:4–13). Petitioner presents several
`theories in support of Bohbot’s teaching of “switching.” Id. at 12–15. In
`particular, Petitioner bases its third theory on Bohbot’s configuration in
`which “the miniature device comprises [] means to detect the presence of the
`detachable headset 20 on the primary module 18,” which “make[s] it
`possible . . . to activate either of the microphones 25 and 26.” Id. at 14
`(citing Ex. 1004, 10:20–11:4, 6:8–9) (emphasis omitted). Petitioner contends
`that Bohbot’s detachable headset 20 teaches the claimed portable switching
`device because, “when it is detected to be present on the primary module
`(portable electronic device), the microphone 25 in the primary module
`transitions, i.e., switches, from an off state to an on state, while the
`microphone 26 in the headset transitions, i.e., switches, from an on state to
`an off state.” Id. at 14–15 (citing Ex. 1004, 10:20–11:4, 6:8–9, 9:1–2, 13:1–
`16, 14:9–11; Ex. 1003 ¶¶ 45–48) (emphasis omitted).
`Patent Owner argues that “Bohbot does not disclose the ‘means to
`detect’ or where such means reside[s] on the ‘miniature device,’ including
`whether [it] reside[s] on the primary module or the headset,” but what
`“Bohbot does disclose is that unspecified ‘means thus make it possible,
`depending on the operating mode of the miniature device, to activate either
`of the microphones 25 and 26.’” PO Resp. 20 (citing Ex. 2001 ¶ 118; Ex.
`1004, 10:21–25). According to Patent Owner, “to a POSITA, Bohbot
`discloses that the operating mode of the main device is determinative of the
`configuration of the miniature device with respect to one microphone being
`on and the other off” but “Bohbot does not disclose how this operating mode
`works.” Id. at 20–21 (citing Ex. 2001 ¶ 119). Patent Owner asserts that, “to a
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`POSITA, Bohbot lacks sufficient details to justify the headset qualifying as a
`switching device, and if anything, the alternating microphone functionality
`cited by Apple is due to an undisclosed operating mode.” Id. at 21 (citing
`Ex. 2001 ¶ 120).
`We agree with Petitioner that “the miniature device comprises []
`means to detect the presence of the detachable headset 20 on the primary
`module 18,” which “make it possible . . . to activate either of the
`microphones 25 and 26.” Pet. 14 (citing Ex. 1004, 10:20–11:4, 6:8–9)
`(emphasis omitted). Further, as discussed in the Institution Decision, and
`which the full record supports, “Patent Owner’s argument does not address
`the fact that the prior art describes a miniature device that detects a
`microphone, which is sufficient to describe that device as a switching
`device.” Inst. Dec. 15 (citing Pet. 14). The ’020 patent does not specifically
`disclose what constitutes the claimed switching device––instead, the patent
`describes switching device in terms of its functionality. See, e.g., Ex. 1001,
`17:63–18:8.
`Additionally, Petitioner disputes Patent Owner’s allegations that “the
`alternating microphone functionality . . . is due to an undisclosed operating
`mode.” Pet. Reply 6 (citing PO Resp. 21). Petitioner asserts, and we agree,
`that Patent Owner’s argument is a mischaracterization of the teachings of
`Bohbot, which Petitioner contends “actually discloses two operating modes:
`‘telephone call in progress’ and ‘no telephone call in progress.’” Id. (citing
`Ex. 1004, 11:1–6). Petitioner persuasively explains that, “[d]uring a
`‘telephone call in progress,’ the alternating microphone functionality is due
`to ‘headset detached’ and ‘headset not detached.’” Id. (citing Ex. 1004,
`11:1–6; Ex. 1088, 76:1–19). More particularly, Petitioner persuasively
`explains that
`
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`the primary module’s microphone is turned off when “telephone
`call [is] in progress and headset [is] detached” and is turned on
`when “telephone call [is] in progress and headset [is] not
`detached.” Thus, during a “telephone call in progress,” the
`primary module’s microphone circuitry switches between
`states—
`from
`off
`(deactivated/inoperative)
`to
`on
`(activated/operative) when the headset is connected and from on
`(activated/operative) to off (deactivated/inoperative) when the
`headset is disconnected from the primary module.
`Id. (citing Ex. 1004, 11:1–6; Ex. 1088, 76:1–19; Pet. 14–15, 28; Ex. 1089
`¶¶ 16–18) (alterations in original). In its Sur-Reply, Patent Owner contends
`that
`
`Petitioner’s Reply attempts to rely upon two new “operating
`modes,” which are “telephone call in progress” and “no
`telephone call in progress.” This untimely theory in the Reply,
`even if erroneously considered, does not support this element
`being met. If anything, it shows a causal connection between a
`phone call and microphone activity, not a causal connection
`between attachment of the earpiece and microphone activity.
`Sur-Reply 11 (citing Pet. Reply 6). Patent Owner’s argument is unavailing
`because Petitioner’s Reply is responsive to Patent Owner’s argument that
`“Bohbot does not disclose how this operating mode works.” See PO Resp.
`20–21 (citing Ex. 2001 ¶ 119).
`We additionally credit the testimony of Dr. Cooperstock who testifies
`that “‘the miniature device comprises[] means to detect the presence of the
`detachable headset 20 on the primary module 18,’ which ‘make it possible . .
`. to activate either of the microphones 25 and 26.’” Ex. 1003 ¶ 46 (citing Ex.
`1004, 10:20–11:4, 6:8–9) (alterations in original). We concur with Dr.
`Cooperstock’s testimony that, “Bohbot discloses that with the ‘headset
`detached[,] microphone 25 [is] off and microphone 26 [is] on’ and with the
`‘headset not detached[,] microphone 25 [is] on and microphone 26 [is] off.’”
`
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`Id. (alterations in original). We further concur with Dr. Cooperstock’s
`testimony that
`Bohbot’s headset is a “switching device” . . . because, when it is
`detected to be present on the primary module (portable
`electronic device), the microphone 25 in the primary module
`transitions, i.e., switches, from an off state to an on state, while
`the microphone 26 in the headset transitions, i.e., switches, from
`an on state to an off state.
`Id. As Dr. Cooperstock “previously explained in [his] First Declaration, the
`primary module’s . . . microphone circuitry [is] . . . activated when the
`headset is connected to the primary module and . . . deactivated when the
`headset is disconnected from the primary module.” Ex. 1089 ¶ 20 (citing Ex.
`1003 ¶¶ 43–48, 72–74).
`
`The cited testimony in Dr. Toliyat’s Declaration concerning this issue
`largely reiterates Patent Owner’s arguments but does not provide a sufficient
`explanation why a POSITA would have found it difficult or impossible to
`implement Bohbot’s headset in the disclosed configuration and operating
`mode, including its detection. See Ex. 2001 ¶¶ 118, 119.
`Having reviewed the entire record developed during trial, we
`determine that Bohbot’s disclosures in this regard would have been
`sufficient to teach a POSITA that the headset operates as a switching device
`for the microphone, and does not need to expressly disclose any attendant
`implementation details as Patent Owner contends. See Pet. Reply 5–6.
`Patent Owner additionally contends that Petitioner “has no
`explanation for how passive transmission of current by Bohbot’s primary
`module would show Bohbot’s headset to be a switching device.” PO Resp.
`17 (citing Ex. 2001 ¶ 106). Patent Owner also contends that Petitioner “has
`no explanation for how passive receipt of data by Bohbot’s primary module
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`would show Bohbot’s headset to be a switching device.” Id. at 19 (citing Ex.
`2001 ¶ 112). These arguments are unavailing because they are not
`responsive to Petitioner’s third theory involving the activating and
`deactivating of the microphone, which we find persuasive for the reasons set
`forth in this section.
`Having reviewed the cited portions of Bohbot and Dr. Cooperstock’s
`testimony, we are persuaded that Petitioner sufficiently demonstrates that the
`combination of Bohbot and Gundlach teaches the subject matter of the
`preamble and claim limitation 1[a]. As there is no dispute between the
`parties as to whether the preamble is limiting and because the combination
`of Bohbot and Gundlach teaches the subject matter of the preamble of claim
`1, we need not determine whether the preamble of claim 1 is limiting.
`1[b] Claim 1 recites “the switching device and the electronic
`device are configured to selectively couple to each other
`employing magnetic force from a first magnet disposed within
`the switching device.”
`Petitioner contends that “[a] POSITA would have also found it
`obvious to configure the speaker of Bohbot’s FIG. 3 headset so that it is
`exposed when the headset is attached to the primary module to allow the
`user ‘to wear the entire device . . . on his/her ear.’” Pet. 15 (citing Ex. 1004,
`10:15–19; Ex.1003 ¶ 49) (alteration in original). Petitioner’s annotated
`version of Figures 2 and 3 of Bohbot, reproduced below, exemplify how this
`combination would be achieved. Id. at 16.
`
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`Petitioner’s annotated version of Figure 2 of Bohbot, above, shows: a device
`30 labeled as a “portable electronic device” that has ferromagnetic material,
`blade contactors, and a microphone; a device labeled “portable switching
`device” that has a first side with magnet 33a (shown with an arrow as
`matching with the ferromagnetic material of the “portable electronic
`device”) and blade contactors 35a as well as a second side with a speaker
`and a microphone. Petitioner’s annotated version of Bohbot’s Figure 3
`communication device modified in view of Figure 2, with headset attached
`to primary module, is reproduced below.
`
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`Petitioner’s annotated version of Bohbot’s Figure 3 depicts a combined
`device in which the first side of the “portable switching device” is attached
`to the “personal electronic device, showing ” a speaker and microphone in
`the portable switching device, as well as a microphone in the portable
`electronic device. Id. at 14–17.
`Petitioner contends that a POSITA would have been motivated and
`would have found it convenient to use Bohbot’s headset alone to participate
`in telephone calls by having a separate microphone in the headset to avoid
`having to be in close proximity to the microphone in Bohbot’s primary
`module during calls. Id. at 17 (citing Ex. 1004, 1:17–20, 2:25–3:3, 10:8–
`11:6; Ex. 1003 ¶ 50). Petitioner asserts that with this operation, and when the
`primary module is attached to a bag, “the user may detach the headset and
`walk away from the bag while still being within Bluetooth range without
`compromising the quality of the user’s spoken audio.” Id. Petitioner also
`contends that a POSITA would have been motivated and found it obvious to
`
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`supplement Bohbot’s Figure 3 based on the teachings of Bohbot’s Figure 2
`to give the user greater flexibility in participating in telephone calls and to
`manage the use of the two microphones to prevent feedback during a
`telephone call. Id. (citing Ex. 1004, 6:8–9, 10:20–11:4).
`Petitioner further contends that, as to the physical coupling, Bohbot’s
`headset (portable switching device) “comprises a magnet 33a, allowing it to
`be held in position in the housing 34 of the primary module” (portable
`electronic device) “due to the additional element 33b installed at the bottom
`of this housing,” which is “a plate made of a ferromagnetic material,
`sensitive to the attraction of the magnet” in the headset. Id. at 18 (quoting
`Ex. 1004, 3:24–4:8,
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